5 191 I 



^(=g^ 



before: the 

0»i 



ti 



IN THE MATTER OF 

/ 
JOHN C. BIEDSELL, 

Fetitioner for an Act authorizing the Commis- 
sioner of Patents to hear and determine his 
application for extension of his Patent — 

MACHINE FOR HULLING AND THRESHING CLOVER. 



PETITION AND STATEMENT. 



Thomas, McGill & Co., Printers, Washington, D. C. 







X-' 



In the. matter of JOHN C. BIRD SELL, pcti(ioftcr,for an Ad 
authorizing the Conunimoner of Patents to liear arid f/rant his 
application for the farther extension of his Letters Patent for 
Machiverji for HaJtinf/ and Thre.<<hinrf Clover. 



To THE Honorable the Senate and House of Represent- 
atives OF THE United States, in Congress assembled : 

Your petitioner respectfully represents, that on tlie 18tli 
day of May, A. D. 1858, Letters Patent, No. 20,249, were 
issued to him for an iniprt)venient in machinerj' for Hulling 
and Threshing C^lover, which Letters Patent were surren- 
dered and reissued April 8th, 1862, Xo. 1299, and extended 
for seven years from and after May 18th, 1872. And your 
petitioner now prays for an Act, authorizing the Commis- 
sioner of Patents -to hear and grant his application for fur- 
tlier extension of his said Reissued Letters Patent, for a. term 
of seven years, from and after the expiration of its present 
term. And in sup[:)ort of his application, asks leave to })re- 
sent the following statement and accompanying affidavits: 

StATExMENT. 

Prior to the date of o])taining the said Letters J'atent, I was 
a farmer, residing near West Henrietta, in the State of New 
York. I owned at that time about two hundred and eighty- 
four acres of land, w^.th farm houses and buildings, the bare 
land worth |100 per acre, and my whole property about 
$38,000. This was eventually all merged in my business of 
manufacturing Clover machines under this patent, and is 
properly chargeable against the patent. 

Before that time clover heads were detached from the 
stems, preparatory to hulling, by the tramping of horses, by 
threshing with flails, by cutting with cradles, (the two Urst 



lingers being covered with canvas and. the heads cut off near 
the place of their attachment to the stems), hy removing the 
heads in the field by an instrument known as a stripper, and 
after mowing, by ordinary thresliing machines. The heads 
were also sometimes detached by a machine designed spe- 
cially for that purpose. Hulling out the seed was a distinct 
process. This was usually done l)y a macliine used for that 
purpose alone. Machines for threshing and those for hulling 
wei'c frequently worked at the same time, side by side. 

These old processes required the clover to be several times 
handled ; they consequently took much time and labor, and 
to that extent added to the cost of clover seed in the market. 
I conceived that it would facilitate the work and cheapen the 
product if an implement could be made to thresh the heads 
from the stems, separate the stems, and pass the heads 
through ahuller, and afterwards through sieves under the inliu- 
ence of a fan, all at one operation and in one machine. I be- 
gan at once to shape my ideas, and made many experiments at 
great expense and with varying success, devoting all my time 
and ready means to the work. I was ol)liged to labor 
against a great number of manufacturers of threshing ma- 
chines and hulling machines, whose agents already liad pos- 
session of the field, and spared no pains to induce farmers 
and others to belie\'e that my machines would prove a failure. 
Moreover, my machines could not be made for the same 
price as the ordinary threshing machines and ac(;ompanying 
hulling machines, and consequently I found that for years it 
was almost an utter impossibility to introduce them. 

The public had to l)e gradually scliooled into the merits of 
my invention. During all this period my machines were cost- 
ing me more than I could get for them, and I was gradually 
running into del)t to the extent of many thousands of dollars. I 
still had faith in the invention, and exhibited my machines from 
time to time at State and county fairs, at great expense of time 
and labor, and a great outlay of money. In 1855 and 1856 
I engaged shop rooni ami employed machinery. I built 
works at West Henrietta in 1856 and 1857, with money 
which I raised wherever I could. In this way I proceeded 



against almost every imaginable oljstaele, until in 1859 my 
debts amounted to over $15,000, and with scarcely any 
assets. In the year 1859 I engaged with a partner, Isaac H. 
Brokaw, who put into the business $500, which he soon with- 
drew, and for four years, viz., until the spring of 1803, he 
drew from the lousiness for his support all the net profits of 
the concern. 

Finding that the lousiness could not be carried on with 
profit in New York State, because of the expenses for stock 
and transportation, and the fact that I had to look for a 
market in the West for my machines, I transferred [)art of my 
machinery to South Bend, Indiana, in the fall of 1863, and 
in April, 1864, moved my family to that place, all at great 
expense, amounting to several thousand dollars, which was 
necessarily added to my already large and harrassing debts. 

Being constantly besieged by creditors, I was liaJde at any 
time to be placed at their mercy, and it seemed as though I 
must certainly be driven into l)ankruptcy. To add to my 
difficulties at this time, I had left one Harrison Ketchum to 
close up my business at Henrietta, agreeing that he should 
have a daily compensation and one fourth of the net profits ; 
but in the latter part of April, 1864, my office at Henrietta 
was set on fire by an incendiary, burning and destro3'ing the 
most of my books and accounts, and partially destroying the 
Ijuilding ; others of my papers were carried off, together with 
some of my Ijooks, l)y Brokaw, and have been lost or de- 
stroyed. 

These losses falling heavily upon me, added greatly to my 
embarrassments, and seemed to cloud all my business jiros- 
pects; and in August, 1864, an incendiary set fire to my 
storehouse at Henrietta, destroying twenty-three machines 
and over fift}' frame works, besides machinery, tools, stock, 
&c., &c., which added greatly to my troubles, and swept away 
the last of my securities or assets, that had formed a partial 
basis for the leniency of my creditors. 

I was engaged nearly the whole of the 3'ear 1864 in mak- 
ing preparations to begin manufacturing at South Bend, but 
in April, 1865, while with my family at the St. J()se[»h Hotel, 



South Bond, the hotel suddenly burned, destroying many 
more of my Itooks and aceonnts, and entaihng considerable 
loss. 

I was I)eginning to get under way. when, in September, 
1867, my ottiee at South Bend took fire from an adjacent 
burning dwelling, and was totally destroyed, together ■uath 
nearly all of my l)ooks and accounts. Tliis loss fell very 
heavily upon me at this time, as I was still laboring against 
a large debt. 

In March, 1807, I took two of my sons into partnership 
with me, and they were to have one half of the net profits of 
the l)usiness. 

In this way we struggled along until the spring of the 
year 1870, making barely enough to kee}) our shops running 
u part of the time, but not clearing our indel)tedness. 

At this time, with a view to escape the l)urden of debt 
resting uj)on the individual iuem1)ers of thetirm, the partner- 
ship was converted into a Joint Stock Company, and called 
the Birdsell Manufacturing Company, composed of myself 
and my three sons, with $50,000 capital stock, of which 
$;->l,000 l)clonged to me, $18,500 to my three sons, and |500 
to our foreman, Charles McNeal, which Company, as respects 
the stockholders, is tlie same at the present day. 

In the progress of my work, infringers had sprung up, and 
when I was about to attack them I was advised by my coun- 
sel that my })atent should first be put into proper shape l)y a re- 
issue. This was done in April, 1802, and in 1803 I brought a 
suit for infringement against the St. Joseph Iron Co. of Misha- 
wauka, Indiana, and recovered a small judgment. In 1804, 
E. K. Collins, of Cliili, New York, l)rought a suit against me 
for infringement of his Letters Patent for screening clover. 
I pleaded my patent and made other defenses, and after two 
years' expensive contest the suit was decided in my favor 
in 1866. In 1867 I began suit for infringement against 
Charles Whittaker, of Chelsea, Michigan, which was settled 
in my favor, and the defendant was enjoined, but no account 
taken. In October, 1871,1 was obliged to bring suit for in- 
fringement against Greggs, Plyer & Co., of Trumansl)urg, 



Ke^v York, wliicli was terminated in my tiivor, but the 
amount recovered was all absorbed by my counsel. About 
the same time I began suit against Wliittaker & Bryan, of 
Penn Yan, New York, for intringement. I obtained injunc- 
tion, but recovered notliing. 

By tins time infringers had become so Ijold that their ma- 
chines w^ere Hooding the market, necessitating a large increase 
in connnissions to agents, greatly increasing the cost of man- 
ufacturing and selling, and utterly ruining the trade, so that 
the expenses of necessary litigations were much in excess of 
tiie protits upon the machines. 

1 should here state that for a few years prior to 1871, 
having had a fsiir trade and regained a certain degree of 
business credit, and presuming, in view of the successful issue 
of my various suits that others would bo deterred from in- 
fringing, and conclufhng, also, that our own business would 
correspondingly increase, we erected extensive works in 
1871, at South Bend, at very great expense, and assumed 
the indebtedness created thereby. But our outlay resulted in 
no adequate return, for our enemies took advantage of our 
utter financial depletion and very burdensome •del)ts to re- 
new their attacks and to wilfully infringe my patent, relying 
apparently upon our distressed financial condition for their 
safet}', thinking to crush opposition by destroyuig our busi- 
ness and crippling all our means of defense. 

Large estal)lishments I)acked l)y great capital opened up in 
many places, and it finally came to that point where w^e must 
close our own doors or else close the doors of our competitors, 
who were boldly infringing my patent. 

I a])plied for an extension of my patent in 1872, and the 
said infringers coml)ined to defeat my application. In this 
conil)ination against me, were the Ashland Machine Co., of 
Ashland, Oliio; McDonald & Co., of AYooster, Ohio; Eussell 
& C^o., of Massillon, Ohio; Garr, Scott & Co., of Richmond, 
Indiana; McConnell, Raymond & Co., of Tecumseh, Michi- 
gan; Glen & Hall Manufacturing Co., of Rochester, Xew 
York; George "Westinghouse & Co., of Schenectedy, New 
York, and the Hagerstown Agricultural Implement Manu- 



fac'tiiriniji; Co., of Ilagerstown, Maryland. These conipaiiies, 
possessed of a very large capital, coiitril)uted equally to con- 
test my application. They employed able and influential 
counsel, and a large mass of testimony, which with the l)riefs 
amounted to upwards of 550 pages of print, was taken, in- 
volving an expense of many thousand dollars on my own 
part before I Anally procured my extension. 

Burdened with this additional debt, it is apparent under > 

what almost insurmountable obstacles I was obliged to begin j; 

my extended term of seven years. 

These parties continued, and greatly increased, their in- 
fringements after the said extension was granted, and I saw 
at once that we would have to stop them before we could 
hope to do any business ourselves. To this end I l)rought 
suit in 1872 against McDonald & Co. d a/., of Wooster, Ohio, 
and against The Ashland Machine Co. et a/., of Ashland, 
Ohio, in the United States Circuit Court for the J^orthern ^ 

District of Ohio. 

The same coml)ination above named contril»uted equally 
in money and means for the defense. The contest was pro- 
longed by every means known to Patent litigations. An 
enormous amount of testimony was taken, amounting to 
about 2(300 pages of print, and costing me about $05,000, as 
nearly as I can determine from the data that I have. ] 

Two years of the life of my extension were thus expended 
in exhausting litigation at the greatest odds against us, in 
the way of money and resources. 

The cases were finally heard before his Honor Noah H. 
Swayne and His Honor Martin AVelker, and I append the 
decision of Justice Swayne hei'eto. 

My patent was strongly sustained in all its material and 
essential features, but five years elapsed before a final decree 
w^as obtained. In the meantime the defendants, in both cases 
becoming insolvent, made assignments, and were not able to 
respond to my claims against them to any extent whatever. 

My extension was rapidly expiring, the others of the 
said combination were still actively infringing my patent, 
and, (hu'ing the whole period of my said suits were continu- 



ally Hooding the market with their inii-iiiging machines, 
which having a life of from live to ten years or longer, still 
exist to destroy the marlcet for my machines, and will neces- 
sarily so exist during the remainder of tlie term of my exten- 
sion, thus depriving me of a single moment of undisputed 
enjoyment of my patent. 

After the said opinion of Justice Swayne sustaining my 
patent, I brought suits, separately, against each of the re- 
maining parties constituting the said combination, and 
although the same comljination assisted in defraying the 
expenses of the defendants, I procured injunctions against all 
of them. 

The said Bir'lsell Manufacturing Company was by this 
time burdened with a debt of over one hundred and thirty 
thousand dollars, (.^130,000,) and was obliged to pay an enor- 
mous sum as interest, although deprived of interest upon tlie 
capital which it had invested. 

The market having been destroyed and there being no 
work for our large and expensive shops, w^e were oldiged to 
shut down during most of the years 1873, 1874, and 1875. 

The infringers had up to tliis time made the l)ulk of all 
the machines, and there remained nothing now to be done 
but to attack the users of the said machines, and, by obliging 
them to stop their use, to compel them to come to our w^oiks 
for machines which they could lawdully use. This final 
movement against users has necessitated the bringing of sev- 
eral hundred suits in ditferent States, and at large ex[)ense. 
Some parties, it is true, settled without suit, at the rate of 
one hundred dollars a machine. But all sums thus collected 
or recovered from infringing users will be oli'set by the ex- 
penses incurred in looking up the machines, enforcing col- 
. lections, and in the compensation of agents and attorneys. 

This course of action began, for the iirst time in all our 
career, to command respect for my rights under said patent, 
and to direct the trade to our establishment at South Bend, 
so that during the year 1876 we managed to do a good busi- 
ness, while infringers were kept moderately quiet. But in 
1877 two of said companies, viz., the Ilagerstown Company 



and the Ashland Company, began again to infringe my 
rights, and shipped large qnantities of machines, which did 
not differ in principle, but varied slightly in mechanical 
construction from their former machines, from the manufac- 
ture of which they were enjoined. This necessitated a new 
action against the successors of the Ashland Machine Co., 
and active steps against the Ila-gerstown Agricultural Imple- 
ment Ahmufacturing Company of Hagerstown. Maryland, 
l)oth at great expense, and with the prospect of a renewal 
and repetition of tlie large expenses that were incurred in 
my former Ohio suits, for we were informed, at a recent hear- 
ing l)efore the United States Circaiit Court at Cleveland, 
Ohio, l)y the judge then presiding, that he understood they 
were expecting again to go over the whole controversy. 

We declared no dividends at the end of the year 1876, 
because the amount owed ])y us on accounts and bills payable, 
was more than the amount due us on accounts and bills 
receivable. 

During the present season of 1877, our works have been 
kept busy, and we expect to realize from all sources a fair 
prolit, although owing to hard times and the bad condition 
of the market, we are obliged to sell our machines fov about 
an average of one sixtli ca-*h and tlie l)alance in one and two 
3'ears. 

It should be remembered that at the present time, and for 
six years past, we have had tied up or invested in buildings, 
stock, machinery, tools, &c., &c., not less than one hundred 
and eighty-one thousand nine hundred and forty-two dollars 
and seventy-one cents, ($181,942.71) at actual cost price, so 
that with the necessary expenses of laljor, it requires the 
manufacture and sale of aljout 181 machines each year to 
cover the interest upon the capital invested, and to defray 
the necessary expenses besides insurance, taxes on property, 
and expenses of watchmen. 

I am still the owner of the said Letters Patent, and will 
own tlie entire patent, if extended. I expect that, as hereto- 
fore, the machines will be manufactured by the Birdsfill 
Manufacturing Company. The said Company has increased 



9 

its capital to one hundred and forty thousand dollars, much 
of which will be a total loss if the extension herein asked for 
be refused. I ani President of the said Company, and own 
$88,200 of the said |140,000, the balance of which is owned 
by my three sons, with the exception of $1,400, owned by 
our foreman, Charles McNeal. 

I here give a list of the manufacturers who were infring- 
ing my said patent, and whom I was oldiged to stop. Some 
necessitated suits at law or in equity, and others stop})ed 
upon threat of suit. I also give as near as I can estimate, 
from data in my possession, the number of machines that 
each has put into the market. 

In New York State. 

Joseph Hall, Rochester 85 machines. 

A. F. Whittaker, Penn Yan 107 

Sayles & Ellsworth, Clyde 35 

Glen & Hall, liochester 535 

George Westinghouse, Schenectady 50 " 

"Wliittaker & Bryan, Penn Yan 104 

Geo. Westinghouse & Co., Schenectady 237 " 

Gregg, Plyer & Co., Trumansburg 23 " 

"Wickson & Yan AVicker, Lyons 43 " 

E. K. Collins, Chih 7 

George Taft, Lyons 19 " 

Darwin Stattock, Branchport, N. Y 5 '* 

Geo. W. Hildreth, Lockport 9 " 

Stephen M. Feezler, Seneca Falls 1 " 

Birdsell & Strowbridge, Pen n Yan 13 " 

Henry Heckman, Dansvill e , . . . . <3 " 

Mr. Hudnett, Geneseo 4 '* 

L Y. Blackwell, Ovid 5 

M. Hubblett, Reynoldsville 3 

Mr. Bundy, Ithaca 2 

In Ohio. 

Ashland Machine Co., Ashland 657 Machines, 

McDonald & Co., Wooster 717 ^' 

2 



10 

Russell & Co., Massillon 175 Machines, 

Francis E. Cook. Seville 23 

Christy <^ Sons '' 29 

Woodson, Teiiey & C-o., ]>aytoii 14 " 

Clai-k & Leser, Canal Fnlton 6 

John W. Smith, Bryan 16 

Lippy & Stocking, Mansfield 7 " 

James Nichols, Gomer 4 " 

Z. Miller, Canal Fulton 6 

Henry Kies, ^N^orwalk 3 

J. 11. Galladay, New Lisht )n 1 

Brown & Grotty, Seville 15 

In Indiana. 

Garr, Scott & Co., Richmond 147 Machines. 

Isaac N. Yonng, Swan 37 

St. Soseph Iron Co., Mishawanka 16 " 

Romley Brothers, Laport 2 " 

In Michigan. 

Cox & Thorp, Three Rivers ., 17 Machines. 

Bm-rmgame & Yager, Tecmiiseh 65 " 

John Richards & Co., Tecmiiseh 45 " 

McConnell, Raymond & Co., Tecumseh 160 

J). K. Raymond & Co., Tecumseh 17 " 

Fosdic & Crawford, Dowagiac 11 " 

I. T. Barton, Union City 5 

Augustus ])eAvey 2 " 

Charles Whittaker, Chelsea 18 

In Maryland. 

Jones & Miller, Ilagerstown 131 Machines. 

Miller, Protzman & Co. , Ilagerstown 170 " 

Hagerstowu Agl. Impl. ^Itg. Co., Ilagerstown. 290 " 

In Pennsylvania. 

I). ]\I. Ileiks, Franklintown 12 Machines. 

M. A. Keller, Littletown 3 



11 

In the present year the firm of Whiting & Shearer of Asli- 
land, Ohio, have made ahout ")() machines. 

The Hagerstown Agricultural Implement Mannfacturing 
Company of Hagerstown, Maryland, about 113 machines. 

Total, 4277 macliines. 

The market is in such a condition, because of the existence 
of these machines, that I cannot receive a reasonal)le profit 
from my invention for several years to come, and the protits 
that I should have derived have been reaped by the abc^ve- 
named infringers. 

Nor will the pul)lic interests be impaired Ijy granting the 
said extension. It should be borne in mind that this inven- 
tion was a new thing ; not merely a new step, l)ut a radical 
departure from what had ever before been done; that it de- 
creased the cost of threshing and hulling clover seed at least 
one dollar per bushel, and to that extent cheapened the cost 
of seed in the market, and has in that way spread its benefits 
and extended its influence all over the country and to mil- 
lions of people. The invention eftected such a revolution in 
the methods ()f getting out the seed, and did the work so 
effectually, that at the present time not one of the old appli- 
ances can be found in the country. 

The fact that infringers have found a demand that has en- 
abled them to flood the country witli their machines, to the 
extent of 4,277, is the best evidence that can l)e adduced of 
the great industries created by the invention, and the estima- 
tion and value in which the said invention has been held and 
regarded by the public at large. 

If I had been unmolested, and had not been ol)liged to 
spend all my resources to stop these infringers, it is reason- 
able to presume that I would have made §100 clear upon 
each machine. Now estimate that upon the machines thus 
made and sold by my infringers, and it is apparent that they 
have defrauded me out of at least four hundred and tweuty-- 
seven thousand seven hundred dollars, (§427,700,) clear profit. 

The following statement of receipts and expenditures will 
show that I have reaped no lienefit orr<*muneration fi-om my 
said patent : 



12 



Siatcitioit of Receipts from Every Source on Accomd of the In- 

ventiori. 

Up to Jaiuiiuy, IS")!), sold '2(j mucliiiies, at an aver- 

ao-eof $220 cacli $5,720 

In 1850, sold ;« niachiues, at $220 t-acli 7,2G0 

"1860, '' 41 " 280 "■ 11,480 

"1861, " 54 '• 230 " 12,420 

"1862, "102 " 235 " 23,070 

"1863, " 34 " 260 - 8,840 

" 1864, " 38 " 270 " 10.260 

"1865, " 42 " 305 " 12,810 

"1866, " 39 " 350 " 13.650 

"1867, "105 " 350 " 36,750 

"1868, " 73 " 350 " 25,550 

"1869, "193 •' 360 " 69,480 

"1870, "296 " 370 " 109.520 

"1871, "303 " 370 '• 112.110 

"1872, "270 " 370 " 99,900 

"1873, "181 " 370 " 66,970 

"1874, "139 " 370 " 51,430 

"1875, " 68 " 370 " 25,160 

"1876, "433 " 370 " 100,210 

"1877, " 590, estimated, 370 " 218.300 

Total... 3,060, at $1,081,790 00 

Present estimated valne of Bnildin<;s, Grounds, 
&c., (costing, as shown by list of expenses, 

$181,942,71,) or present value of .stock 90,971 35 

Received from Perrigo, Avery & Field, Royalty... 2,000 00 

Received from Perrigo & Avery 4.000 00 

Received from Harrison Ketchum 325 00 

Received from O'Farrell, Daniels A Co 250 00 

Received from St. Josepli Iron Co 240 00 

Received fiom Hagerstowu Agri(.'ultnral Imple- 
ment Mannfacturing Co 2,000 00 

Total receipts fiom every source on account of 
tlie patent $1,181, 57ft 35 



13 



Statement of Expenditures on Account of the Patent. 

Up to the beginning of 1864, had expended over 
$15,000 more than I had received, in addition 
to ^Yhatever I had expended in shops, tools, 
niaehinerv, &c. I had sold to this time 290 ma- 
chines, which had returned $(39,(390, but which 
had cost $15,000 additional, or $84,690, or 
an average of $292 each ; therefore expended 
prior to 1864, in making and introducing 290 

machines, at $292 ^ .^ $84,690 00 

Loss of office, shops, macliinery, tools, &c., in 1864 

tires, over and above insurance 5,790 00 

Loss by St. Joseph Hotel lire, April, 1865 500 00 

Loss by September, 1867, fire 1,000 00 

Expenses of extension contest in 1872, testimony, 
exhibits, counsel, traveling, hotel expenses, wit- 
nesses, notaries, printing. Government fees, &c,, 

about r. 12,500 00 

Expenses of two years' litigation against McDonald 
& Co. et al., and aganist Ashland Macliine Co. 
ct al., in Northern District of Ohio, and before 

Master, about 65,000 00 

Expenses of proceedings against George Westing- 
house & C'O., testimony, counsel, time, and 

travelling expenses, &c., about 3,800 00 

Expenses against Ilagerstown Agricultural Im- 
plement Manufacturing Company 2,000 00 

Expenses in two suits against IVIcConnell, Ray- 
mond & Co ". 1,200 00 

Expenses in suit against Garr, Scott & Co 700 00 

Expenses in suit against Perrigo, Avery & Field.. 1,500 00 

Expenses in suit against St. Joseph L^on Co 250 00 

Expenses in suit with E. Iv. Colhns 2,000 00 

Expenses in suit aagainst Charles Wittaker 1,200 00 

Expenses in suit against Gregg, Flyer & Co 500 00 

Expenses of suit against Whittaker & Bryan 600 00 

Government tax on sales and income tax during 

1863 to 18(38, at 10 per cent 10,786 00 



14 

Expended in ]»nil(lii]i2;s,gr()uii(ls,&c'.<f(i4,781 46 

Engines and Boilers 10,7()() 00 

Lii^ Shafting, Pulleys, &c 5,310 39 

Patterns and Flasks 4,300 00 

Maclnnery in Factory 1 9,040 00 

Tools fo/shop '. 2,683 83 

Horses, Wagons, &c 596 67 

Steam Fixtures 4,891 38 

Miscellaneous Articles 3,288 67 

Shafting, &c 6,173 36 

Pulleys^ Leather, &c 608 70 

FeedKollers and Cylinders 2,022 93 

Malleable Castings "^and Wire 236 82 

Iron "^ 788 35 

Lumber Account 4,631 17 

Lumber Account 1,299 63 

Stock of Materials for Machines. . . 50,531 35 

Total cari-ied each year from 1871, inclusive... |181,942 71 

The money thus tied up consisted partly of 
wliat we had managed to realize from the 
business of the two preceding years, but 
principally of money borrowed at the rate 
of ten per cent. ; work and materials that 
had been advanced by builders and contract- 
ors, and machinery, stock, &c., that had 
been sold to us on credit, for which we had 
not paid, and upon which we were paying 
interest at the same rate. 

Interest at 10 per cent, for seven years on 

above sum of $181,942 71 at 18,194 127,385 00 

Expense of making and selling 1,089 ma- 
chines, from 1864 to date of extension in the 
heginning of 1872, at |258.24 281,223 36 

Expense of manufacturing and selling 1,681 
machines from date of extension to in- 
clude 1877, at $270 453,870 00 



Total expenditures on account of patent $1,238,437 07 



15 



Rccdpitidation. 

Total expenditures on account of the patent... |1, 238,437 07 
Total receipts on accomit of the patent 1,181,576 35 



Excess of expenditm-es over receipts 56,800 72 

Mv proportion of tliis indebtedness on account of the 
Patent is ,8/2')') q^. $35,809. Add to this what I was worth 

14 

when I made the invention, viz: .$38,000, and which, though 
used up, is not emljraced in the aliove sum, and it is seen 
that my personal expenditures on account of the Patent have 
exceeded my receipts from the Patent to the amount of 
$73,809. 

There have been no receipts on account of tlie invention 
from foreign countries. 

I have been unal)le to arrive at a more detailed presenta- 
tion of the receipts and expenditures, on account of my 
patent. So many of my l)ooks and accounts have been de- 
stroyed by tire or carried otf and lost, that I have very im- 
perfect data relating to the early days of my patent, and 
some of the amounts have to be estimated, but the abo\'e 
presentation is substantially correct. 

Having finally succeeded in a great degree in stopping in- 
fringers, I feel conlident tliat I can, if my patent is again ex- 
tended, reap a sufficient reward from my invention to com- 
pensate me for my time, ingenuity, and expense bestowed 
upon it and for its introduction into public use. 

It is apparent from the foregoing showing of expensive 
litigations, that instead of deriving a sufficient remuneration 
for my invention during my extension, all my means have 
been swallowed up in contesting for my rights, and that 
before they could l)e secured by decrees of the Courts, the 
infringers had used up my short extended term, and had so 
flooded the market with their long-lived macliines as to 



16 

effectually prevent me from secm-ing tlie advantage which 
my extension was designed to give me, 

I append hereto the opinion of Justice Swayne sustaining 
my said Patent. 

John C. Birdsell. 
South Bend, Indiana, 

December 20//;, 1877. 



District op Columbia, ) 
Coimt[i of W<fshhiy/{o)i. ) ' '' ' 
Before me, a notary public in and for said District of Co- 
lumbia, personally appeared the said John C. Birdsell, and 
being by me duly sworn, deposes and says that the foregoing 
statement by him subscribed is true to the best of his knowl- 
edge and belief 

Frank Galt, 

Notary Public, 
Washington, D. C, Janrnwn 10, 1878. 

[seal.] 



NORTHERN DISTRICT OF OHIO- 



JOHN C. BIRDSELL 



vs. 



ANGUS MCDONALD ETAL. 



THE SAME 



ASHLAND MACHINE COMPANY ^t al. 



OPINION OF THE COURT 



MR. JUSTICE SWAYNE 



FISHER &' DUNCAN, 

For ComplaiiHDit. 

GEO. WILLEY &f GEO. EEX, 

For Defendants. 



CLEVELAND : 

LEADER PRINTING COMPANY, I46 .SUPERIOR STREET. 
1876. 



r 



Circuit Court of the United States 

FOR THE NORTHERN DISTRICT OF OHIO. 



April Term, iSj^.. 



John C. Birdsell, 

vs. 

Angus McDonald, et al. 

The Same, I 

vs. I 

The Ashland Machine Company, et al. / 

SVVAYNE, JmtiGe: 

These are suits in equity fouuded upon certain patents issued to the com- 
plainant, touching machinery for getting out clover seed. Except in one par- 
ticular, hereafter mentioned, the bills in both cases contain the same allegations. 

The parties agree as to the state of the art down to the period of the alleged 
inventions of the complainant. 

Before that time clover heads were detached from the stems, preparatory to 
hulling, by the tramping of horses, by threshing with flails, by cutting with 
cradles (the two first fingers being covered with canvas and the heads cut off 
near the place of their attachment to the stems), by removing the heads in the 
field by an instrument known as a stripper, and, after mowing, by ordinary 
threshing machines. The heads were also sometimes detached by a machine 



(lesi^nied specially for that purpose. Hulling out the seed was a distinct 
process. This Avas usually done by a machine used for that purpose alone. 
Machines for threshing and those for hulling were frequently worked at the 
same time, side by side. 

These instrumentalities were irrespective of the machines to which our 
attention has been called by the learned counsel for the defendants. They 
were intended, it is claimed, each to combine the processes of detaching the 
heads, hulling out the seeds, and removing the chaff, without the aid of any 
other instrumentality. 

In regard to the date of the complainant's original invention, the proofs 
satisfy us of the following facts: 

He made his first combined threshing and hulling machine in the summer 
or forepart of the fall of the year 1855. It .was not entirely successful. It 
cut the seeds to some extent, and had other defects, subsequently corrected. 
He made one or two more machines in the year 1856. His model for the 
Patent Office was completed about the 1st of December, 1855. He made oath 
to his application for a patent January 19, 1856. He exhibited a machine at 
the State Fair at Buffalo in 1857, and took the first premium. 

There is some conflict in the testimony as to this branch of the case, but it is 
much less than is usual where the invention involved is so important, where 
the adverse interests are so numerous and potent, and where the preparation 
for the defence has been so thorough. The effect of the evidence is such as to 
leave no doubt in our minds upon the subject. 

There is no foundation for the objection that the invention was abandoned 
to the public. The measures taken by the complainant to procure a patent, 
and its subsequent issue, are conclusive against the proposition. It is true, the 
application was not filed in the Patent Office until the 3d of February, 1858, 
more than two years after it was sworn to; but the delay was owing to the 
remissness of the agents to whom the business of ])rocuring the patent was 
confided. They had the application, the model and the requisite funds in their 
hands during all the intervening time. The complainant was ignorant of their 
neglect, and should not be held responsible for the delay that occurred. 

He sold no machine prior to two years before the filing of the application. 

He used the one first made publicly, but to what extent and under what 



circumstances is not clearly shown by the evidence. It is shown that the use, 
whether more or less, was tentative, and that by the light of experience thus 
acquired, he made the subsequent and better ones. Public use in good faith 
for experimental purposes and for a reasonable period, even before the beginning 
of the two years of limitation, cannot atfect the rights of the inventor. The 
objection rests upon the principle of forfeiture, and is not to be favorably re- 
garded. Every reasonable doubt should be resolved against it. But where 
either of the facts of this class specified in the statutes is clearly made out, the 
result is as it there had been the faikire of a condition precedent, and the defect 
is fatal to the patent. Neitlier a court of law nor a court of equity has any 
dispensing power. It is alike the duty of both to give full eifect to the law 
Neither can interpolate a qualification with which Congress has not seen fit U 
temper the rules prescribed. 

The complainant is not barred l)y laches or acquiesence. 
The facts disclosed in the record are not such, we think, as to take away his 
right to maintain these suits. 

The complainant's bill against McDonald and others is founded upon two 
patents, reissue No. 1,299, and original patent No. 35,209. The bill charo-es 
the defendants in that case with infringing all the claims, three in number, of 
the reissue, and the 3rd claim of the original .patent. 

As regards the reissue, the case is the same as to the defendants in both suits. 
The third claim of No. 35,209 is as follows : 

"The spiral conveyor, W, in combination with the hulling-cylinder, for 
distributing the tailing from the elevator uniformly to the hulling-cylinder." 

As to this claim, we deem it sufficient to remark that the evidence has failed 
to satisfy us of its originality with the complainant, or its infringement by the 
defendants as alleged. The subject is of little importance as compared with 
the issues arising under the other patent. We shall, therefore, say uothino- 
further upon the subject. 

The bill must be dismissed as to this claim. 

In the specifications of tlie original patent. No. 2,024, issued May 18, 1858, 
of which No. 1,299 is a reissue, the invention is described as consistino- of 
"certain new and useful improvements in machines for threshing and hulling 
clover." The claim is as follows: Having thus described my invention, what 



I claim therein as new, and desire to secure by letters patent, is the arrange- 
ment of the slatted belt, b b, with the bolt, B B^, tattle, T, threshing cylinder, 
T>, hulling cylinder, L, and fan, F, the whole operating in the manner and for 
the purpose substantially as set forth. 

In the specifications of the reissue the patentee says : 

*' Be it known that I * * have invented a new and useful machine for 
" threshing clover, to separate the seed, hull, and clean it at one operation or 
" in one machine. 

" Prior to my invention, clover was threshed by a machine which only sepa- 
" rated the seed, with the hulls on it, from the straw and heads, and the seed 
" was taken, by manual labor, and put into another machine of a different con- 
" struction, to remove the hulls and cleanse the seed. 

" The object and purpose of my invention and improvements has been to 
" make a machine which would thresh the clover and separate the seed from 
'' straw or stalks and heads, remove the hulls from the seed, and clean it ready 
"for use or market. And I have succeeded in making a machine which will 
" thresh, hull, and clean more than twice, and nearly three times as fast as it 
" has been done heretofore, with the same or a given quantity of labor and 
" power. 

" The nature of my invention 'and improvements in machines for threshing 
" clover and hulling and cleaning the seed, consists in arranging and combining 
'* in one machine the cylinder which threshes the bolls and seed from the straw 
" or stalks, and the cylinder which hulls the seed, so that the bolls and s°ed 
" threshed may be separated from the straw or stalks, and conveyed from 
" the threshing to the hulling-cylinder, and the seed hulled before it passes out 
" of the machine ; and in combining with the above a bolting or screening and 
" conveying apparatus, to separate the bolls and seed from the straw or stalks, 
'"' and deliver them to the hulling-cylinder; also in combining with the thresh- 
" ing and hulling cylinders, a screening and fanning apparatus, to separate the 
" hulls or bolls, and clean the seed after it leaves the hulling cylinder." 

He then proceeds to give a full and clear description of the machine and of 
the mode of constructing it, and concludes as follows : 

" J will now state what I desire to secure by letters patent, to-wit : 
" 1 claim the arranging and combining in one machine the cylinder which 
"threshes the bolls and seed from {he straw or stalks and the cylinder which 



"halls the seed; so that the bolls and seed threshed may be hulled before it 
"(the seed) passes out of the machine. 

"And in combination with the threshing and hulling cylinders above claimed, 
" I claim the bolting or screening and conveying apparatus, which separates the 
"bolls and seed from the straw or stalks, and delivers them to the hulling- 
" cylinder. 

"And in combination with the threshing and hulling-cylinders, I claim the 
"screening and fanning-apparatus, which separates the hulls or bolls and cleans 
" the seed after it leaves the hulling-cylinder." 

It is objected that the reissue is broader than the original patent, and, there- 
fore, void. 

The Commissioner of Patents awarded the reissue. The subject was placed 
by the lavv within his jurisdiction. His decision is to be held prima facie 
correct in all cases, and it is conclusive unless impeached for fraud, or unless it 
is clear upon the face of the several specifications that the reissue is not for the 
same thing as the original patent. Where a remedy is sought for fraud it must 
be in an independent proceeding had directly for that purpose by a bill in 
equity in the name and by the authority of the United States. — Goodyear rs. 
Bowen, 9 WalL, 799 ; Whitney vs. Mowery, 14 Wallace, 434. 

Inventors are a meritorious class of men. They are not monopolists in the 
odious sense of that term. They take nothing from the public. They con- 
tribute largely to its wealth and comfort. Patent laws are founded on the 
policy of giving to them remuneration for the fruits enjoyed by others of their 
labor and their genius. Their patents are their title deeds, and they should be 
construed in a fair and liberal spirit to accomplish the purpose of the laws 
under which they are issued. We have examined carefully the specifications 
of both patents and are satisfied that the Commissioner decided correctly. 

It is further objected that the reissue is for a mere aggregation of old things — 
that tha aggregation involved nothing of invention, and was without merit, and; 
therefore not patentable. 

The slightest examination of the specifications, the model, and the evidence 
will at once dispose of this illusion. The machine, though made up of several 
elements, is a unit. Its purpose is to get out clover seed and prepare it for 
use. All its parts co-operate for that result and are necessary to that end. 
Without either thn'c would be a failure to the extent of the function which it 



performs, and the work intended to be accomplished would be imperfectly done. 
It is not necessary that every function should be performed simultaneously. 
Their connection and operation, as in this case, in immediate succession is 
sufficient. There is no analogy between this case and the one relied upon by 
the counsel for the defendants as authority upon the subject. 

In order to consider intelligently the questions of novelty and infringement, 
it is necessary to determine in advance the proper construction of the patent. 

It is for IMPROVEMENTS upon pre-existing machines. This is its most 
prominent point. 

The improvements are in the combinations described. 

The parts are old. There is nothing new in any of them. The novelty lies 
in combining them in the manner set forth, and in the striking and valuable 
eifeets thus produced. 

We agree with the counsel for the defendants that we are to look to the body 
of the specification for the intermediary and auxiliary means of giving to the 
things claimed as the defendants" invention operative effect, but we do not 
agree with them in the inference they draw from this proposition. 

The specific claims set up are — 

(1) The combination of the threshing and the hulling cylinder. 

(2) In combination with these the bolting, screening and conveying appa- 
ratus, which, operating between the threshing and the hulling cylinder, supplies 
the latter with the material upon which its function is to be wrought. 

(3) In combination, also, with the two cylinders, the screening and fanning 
apparatus. 

If any machine, of practical success and value, having these combinations, 
was "known and used by others before" the complainant completed his inven- 
tion, then his patent is void. If, on the other hand, there had been no such 
machine, his patent is valid; and, in such case, every machine since constructed 
j^aving substantially the same combinations, though not using the same instru- 
mentalities, but, instead of them, mechanical equivalents older than the inven- 
tion, is a violation of his rights. This proposition assumes that the machine 
of the complainant was a success. The proof shows that it was a great and 
brilliant one. The result of his invention was his, and. another cannot appro- 
priate it by merely changing the form and shape of the appliances employed. 
That these appliances had long been known in the state of the art, and that 



those employed by the patentee are of the same character, is immaterial. It 
is the combinatioQS and their new effect that are to be regarded. Any change 
merely colorable, involving no new idea, requiring not invention, but only 
mechanical skill, to make it, a change which retains the idea of the patentee 
and the substance of his invention, notwithstanding the different drapery in 
which that substance is clothed, cannot avail to protect a party charged with 
infringement. 
I The superiority of an alleged invention in utility and effect over what had 

gone before it, is proof tending to establish the fact of novelty. 

If the views we have expressed as to the construction of the patent, and the 
rules we have laid down upon the subject of infringement, are correct, it will 
hardly be denied, if the patent is valid, that the defendants have offended as 
charged in the bills. 

Viewing the subject from this stand-point, no question was raised by the 
counsel for the defendants in the discussion before us. The main stress of their 
i argument was upon two propositions : 

That the })atent was void for want of novelty. 

That if it were not void, the patentee having used instrumentalities, all of 
which were old, in making his combinations, the defendants had a right to use 
other and different old instrumentalities in the same way and for the same 
I purpose. 

We shall forbear to examine in detail the evidence relating to the second 
proposition. In our view it supports fully the complainant's allegations and 
brings the case within the rules we have laid down upon the subject. 

The question of novelty is the only one about which we have felt any diffi- 
culty. At first the defence s:ruck us as formidable. Reflection and a full 
examination of the evidence has removed all doubt from our minds and enabled 
us to reach a satisfactory conclusion. 

It is insisted that the complainant's alleged invention was anticipated by 
what were designated in the argument as — 

The machine of Hizer. 

The machine of Rowe. 

The machine of Mathews & Kahle. 

The machine of Hathaway. 

The machine of Feezler. 



The argiimeut before us was directed chiefly to the two machiues first 
mentioned, and our remarks will be confined to them. 

The question relating to the Hizer machine was before the Commissioner 
when he granted the reissue. His opinion upon that occasion is in evidence. 
He says: "It only requires an inspection of these" (the model and drawing) "to 
show that this machine never had, and never was intended to have, a threshing 
cylinder. The Hizer machine was designed to take the clover heads, after they 
had been seperated from the straw, and hull them. It was a huller, and not 
a thresher a(.d huller." A large number of witnesses were examined on both 
sides. This view, we think, is sustained by a very decided preponderance of 
the evidence. 

France testifies that the upper cylinder was a picker with wooden pins, and 
merely picked the chafF apart. He had thirteen others testify that the heads 
were trampted or threshed off before they were fed to the machine. None of 
the witnesses examined had better means of knowledge or are more trustworthy 
then these. Ten of them testified that they saw the machine in use and that 
it had but a single cylinder. The machine was used for one of them — Patter- 
son. He saw the first combined machine he ever saw the October before his 
deposition was taken. 

Crites, another of them, says he ran a machine on shares with Hizer two 
seasons — 1847 and 1848. He says the heads were threshed or tramped off 
and fed to the machine with a scoop or shovel. He never knew of Hizer 
building a machine with two cylinders, and he never saw a machine with two 
cylinders until the Monday before he was examined. 

C. H. Lizor furnished Hizer with money to enable him to get his patent, 
and got one of the machines. It had but one cylinder. 

George H. Lizor helped Hizer to make his model. It had one cylinder. He 
first heard of a combined machine two years before he testified. 

Heck manufactured the machines in the summer and fall of 1847. They 
had one cylinder. They did not prove successful, and the manufacture was 
abandoned. 

Allen Smith worked with Heck, and his testimony is to the same effect. He 
first heard of a combined machire in 1858 or 1859. 

Knox saw a picker on the machine. Hizer took it off and laid it away 
before the machine was used. 



9 

Mowrey testifies that the picker was a failure and was removed. 

Mrs. Hizer, the widow of the patentee, was well acquainted with the 
machine. Her te-rtimony is clear upon the subject. She says: "The first 
machine had a roller on top — a picker they called it. Well, then the clover 
got tangled with the roller on top so they could not work with that on. Then 
it worked and cleaned the seed after he took tliat off. By that she says she 
means the picker. She says further that the picker was taken off the day 
Hizer beg-an to use the machine. 

Comment is unnecessary. There is some conflicting evidence, but it fails to 
neutralize the effect of that to which we have adverted. 

The patent issued to Rowe is in evidence. It is dated April 30, 1861, 
nearly three years after the emanation of the patent to the complainant. The 
defendants rely, of course, not upon the patent to Rowe but upon machines 
used by him at different periods from 1845 to 1857. The complainant's 
counsel admit that during that time Rowe did make and use two or three 
machines with two cylinders, but he insists that they were both hullers; that 
neither was a thresher; that the machines were experimental — were failures, 
and that they were finally abandoned. The defendants examined eleven 
witnesses, and the complainant fifteen. We shall advert to only so much of 
the evidence taken as we deem material for the purposes of this opinion, giving 
the names of the several witnesses, in connection with a brief resume of their 
testimony respectively. 

Henry C. Smale. Age, 6-3. Farmer in West Virginia. Had a Rowe 
machine to thresh clover seed for him in 1855, and for two or three years 
thereafter. The machine was run by Bender & Hyeronymous. It did not 
work at all. He had a great deal of trouble with it. It left about one-third 
of the seed in the straw. The clover was gathered with a cradle which had 
three fingers and a trough. 

John B. Tites. Had a Rowe machine thresh for him in 1852. It had tw(» 
cylinders. It threshed slow — gave trouble about choking, and ground the 
seed. The first day it threshed three and half bushels. Don't know whether- 
this was an average day's work. The best and plumpest of the seed wen; 
broken and of no account. 

Jacob Wolf. Saw the Rowe machine in 1847. First had a single huller. 



10 

Fivst change Howe made was by adding the screen, then the second cylinder, 
or stemnier, that knocked the seed oiFthe straw. Heard Col. Lucas tell Rowe, 
when he attached the second cylinder, to get out a patent. Rowe said he did 
not want a patent as the machine then was. An average day's work, before 
the extra cylinder was added, was from three to five bushels. After the 
second cylinder was added, the machine did not thresh so much. The upper 
cylinder hulled out considerable seed when the clover was dry. 

A. J. Read. He used one of Rowe's machines in 1850. It had two cylin- 
ders. The machine separated the hulls from the straw. The second cylinder 
hulled the seed. Some days the machine threshed twelve bushels, but the seed 
was dirty and had to be sifted. He never saw any clean seed from the 
machine. Some days it did not thresh more than a bushel ; some days the 
machine threshed without breaking the seed, some days they were broken very 
much. Rowe often said he did not consider the machine "a genuine one," but 
expected to perfect it. The clover was sometimes prepared by stripping and 
sometimes by cradles. 

Michael Wolf. He tried a Rowe machine in 1848, and could not make it 
work. The seed was broken so much that Rowe would not let him hull any 
more. He finished that job, and several others that had been begun, with a 
Fitz machine with one cylinder. 

Georqe W. Spotf.'^. Knew of one of Rowe's double cylinder machines in 
1855. The machine was taken to Scavel's, and left there to rot. "Rowe was 
most invariably altering his machines, and often told me he could perfect a 
better machine. The war broke out and broke the old gentleman up. He 
never succeeded.^ ^ 

B. W. Kanode. The Rowe machine got out from four to six bushels of 
seed per day. The seed was cut. 

Samuel Walton. Rowe stated "that the machines he had been working, up 
to the time he got his patent in 1861, were experimental. Did not consider 
th^m perfect. That he had made numerous changes in that time." He said 
"that he did not consider any of his machines, up to that time, worth getting 
a patent for." 

Hiram King. Resides at Hagerstown, Maryland. Is a wheelwright. 
Became acquainted with Rowe in 1847 or 1848. He was then running a 



11 

huUer. Worked for him in 1847 in repairing an old two-cylinder machine. 
Worked for him again in 1858 upon an old machine, and assisted him in 
building a new one. 

Q. 45. Do you know anything of the practical working of the old two- 
cylinder machine? A. I do; as far as my judgment about machinery, they 
were not practical machine^.^' 

There is other testimony more favorable to the machine, but it fails to repel 
f the force of that to which we have referred. There is also proof of the 
r defective working of a two-cylinder Rowe machine reproduced, and expert 
testimony taken by the complainant. 

We do not deem it necessary particularly to advert to either. 

Let the Rowe machine, as described by all the witnesses, be contrasted with 

the machine of the complainant. The latter is capable of threshing and 

hulling out, and cleaning and preparing thoroughly, the seed for market. 

Its superiority lies alike in the quantity and the quality of the work which 

\ it performs. 

We think the Rowe machine was experiiuental, imperfect, and of no prac- 
tical value. 

The line of demarcation between the Birdsell machine and those that went 
before it, is that which separates success from failure. There can be no better 
t proof of this than the crowd of imitations which have followed the invention 
' of the complainant. 

There is less ground for claiming that either of the other machines which 
have been mentioned is a defence for the defendants, than that those are 
which have been considered. 

The testimony of Davis and Schuyler, under the circumstances, requires no 
remark. 

We'ftold that the attack on the patent for want of novelty has failed. 

It appears in the evidence that there was a struggle between these parties 
upon this question, before the Commissioner, when the patent was extended. 
The proceeding was ex-parte. We have considered the case as if no such 
contest had occurred. 

A decree will be entered in each case in favor of the complainant, in the 
usual form, for an injunction, for an account, and for costs. 



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